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Summary Judgment Trademark Litigation

McDermott Will & Emery

Up in Smoke: Statutory Trademark Damages Can Exceed Actual Damages

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Addressing a jury’s statutory damages award that surpassed the plaintiffs’ actual damages, the US Court of Appeals for the Eleventh Circuit affirmed the district court’s denial of the defendant’s motion for judgment as a...more

Harris Beach Murtha PLLC

Fourth Circuit Confirms: Physical Distance Does Not Avoid Trademark Confusion

The Fourth Circuit Court of Appeals recently issued a decision confirming that using similar names for businesses in the same industry can result in a likelihood of confusion despite the physical distance of the entities. In...more

McDermott Will & Emery

When Analyzing Likelihood of Confusion, It’s Not Just Location, Location, Location

The US Court of Appeals for the Fourth Circuit vacated a district court’s decision finding no infringement that focused on only the geographic distance between the physical locations of the two users without considering the...more

Fox Rothschild LLP

TTAB Practitioners Beware: TTAB Dismissals With Prejudice, But Without Judgment, Can Support A Claim Preclusion Defense

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In a recent precedential cancellation decision, the Trademark Trial and Appeal Board (“Board”) partially granted Respondent’s motion for summary judgment, holding that the parties’ stipulation that prior proceedings between...more

Katten Muchin Rosenman LLP

The Nittany Lions Are the Champs … Trademark Champs - The Katten Kattwalk/Kattison Avenue | Issue 4

Many eyes were on the Nittany Lions this past year as sports pundits speculated The Pennsylvania State University (Penn State) would make it to the College Football National Championship. But those with an interest in...more

McDermott Will & Emery

Chickening Out: Reason for Trademark Abandonment Irrelevant Without Proof of Intent to Resume

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The US Court of Appeals for the First Circuit affirmed a district court’s summary judgment decision finding that the prior owner of a trademark for fresh chicken had abandoned the mark by failing to use it for three years and...more

McDermott Will & Emery

Rebel Libertarians Aren’t at Liberty to Violate Lanham Act

In a case that required the US Court of Appeals for the Sixth Circuit to articulate the boundary between the Lanham Act and the First Amendment when the trademark in question is the name of a political party, the Court found...more

Sheppard Mullin Richter & Hampton LLP

Divided 9th Circuit Says District Court Has Power to Adjudicate TM Applications

In BBK Tobacco & Foods LLP v. Cent. Coast Agric., Inc., 97 F.4th 668 (9th Cir. 2024), the Ninth Circuit Court of Appeals held that federal district courts have power to adjudicate trademark applications pursuant to the Lanham...more

McDermott Will & Emery

Taking the High Road: Ambiguity Regarding “Versions” of Beer Precludes Summary Judgment

The US Court of Appeals for the Second Circuit affirmed a district court’s summary judgment denial and determination that the definition of “beer” (which encompassed “other versions and combinations” of beer and malt...more

McDermott Will & Emery

All That Glitters: Use of Registered Mark To Describe Watch Color Was Fair Use

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The US Court of Appeals for the Second Circuit affirmed a district court’s grant of summary judgement to a luxury-watchmaker defendant, holding that its use of a registered and incontestable trademarked term was fair use...more

Jenner & Block

“Must’ve Never Met Her”: Luke Combs & Personal Service Under Illinois Law

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On December 13, 2023, Variety reported that Luke Combs stated he was “sick to [his] stomach” to learn he won a $250K judgment in Illinois federal court against a Florida woman who earned $380, selling 18 handmade Luke...more

Ladas & Parry LLP

New York Court Sides with PepsiCo on Remand in Ongoing Rise Brewing Dispute

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In Riseandshine Corporation v PepsiCo Inc (SDNY-1-21-cv-06324), plaintiff Riseandshine Corporation, doing business as Rise Brewing, brought three federal and two state claims relating to trademark infringement and unfair...more

McDermott Will & Emery

Disgorgement of Profits Appropriate Remedy for Breach of Contract, Trademark Infringement

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In a trademark infringement and breach of contract case involving real estate companies with a shared name, the US Court of Appeals for the Fourth Circuit affirmed summary judgment in favor of the trademark owner, including...more

McDermott Will & Emery

Remedies as Big as Your Bamba

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Following the district court’s finding of trademark infringement on summary judgment, the US Court of Appeals for the Sixth Circuit affirmed the district court’s subsequent award of profits, costs and attorneys’ fees in favor...more

Woods Rogers

What Barbenheimer Can Teach Us About Intellectual Property

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Barbenheimer is a new term for consecutively watching the movies “Barbie” and “Oppenheimer.”  In honor thereof, we present the Barbenheimer Legal Alert. Did you know Mattel sued, and lost, to stop the “Barbie Girl” song?...more

McDermott Will & Emery

Elevate the $: Geographic Isolation Helps Defeat Trademark Infringement Claim

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In a case between similarly named banks, the US Court of Appeals for the Tenth Circuit confirmed expert disclosure requirements, conducted a de novo likelihood of confusion analysis and ultimately upheld a finding of no...more

McDermott Will & Emery

On the Road Again: Alternative Designs May Impact Trade Dress Functionality Analysis

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The US Court of Appeals for the Sixth Circuit reversed and remanded a summary judgment ruling, finding that there were genuine disputes of material fact regarding whether the plaintiff’s alleged trade dress was functional and...more

Ladas & Parry LLP

Fourth Circuit Confirms That ‘Gruyere’ is Generic for Cheese

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The appellants, Interprofession du Gruyère and Syndicat Interprofessionnel du Gruyère, are two consortiums, Swiss and French, that regulate use of the term ‘gruyere’ to refer only to cheeses produced in the Gruyère district...more

McDermott Will & Emery

The Fondues and Don’ts of Certification Marks

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The US Court of Appeals for the Fourth Circuit affirmed a summary judgment grant in favor of the opposers of a certification mark application for the trademark GRUYERE to designate cheese that originates in the Gruyère region...more

Ladas & Parry LLP

Gruyere Cheese is Gruyere Cheese... Even in the United States

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On March 3rd, the United States Court of Appeals for the Fourth Circuit in Virginia upheld a ruling that cheese labeled GRUYERE can be used to legally describe cheese made from outside the Gruyere region of Switzerland and...more

Skadden, Arps, Slate, Meagher & Flom LLP

Jury Finds That ‘MetaBirkin’ NFTs Infringed Hèrmes’ Trademark Rights

At the heart of what is considered the first NFT trademark trial were two competing arguments: Were the artist Mason Rothschild’s creation of “MetaBirkin” NFTs — digital images of blurry faux fur-covered handbags inspired by...more

Polsinelli

Jury Sides with Hermès in Pivotal NFT Trademark Case

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On February 8, 2023, a federal jury awarded Hermès International and Hermès of Paris, Inc. (“Hermès”) $133,000 in its trademark lawsuit against designer Mason Rothschild. Hermès sued Rothschild for selling non-fungible tokens...more

Nelson Mullins Riley & Scarborough LLP

NFTs Found to Infringe Hermès Trademark

In a case with clear implications for non-fungible token art-based projects, a federal jury in the case of Hermès International, et al. v. Mason Rothschild, 1:22-cv-00384 (SDNY), found in favor of fashion brand Hermès in its...more

McDermott Will & Emery

I Know That Brand . . . Or Do I? Reviewing the Eleventh Circuit’s Likelihood of Confusion Analysis

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The US Court of Appeals for the Eleventh Circuit reversed and remanded a district court’s summary judgment ruling finding no likelihood that consumers might be confused as to any relationship between competitors operating in...more

McDermott Will & Emery

Functionality Dooms Alleged Trade Dress Protection

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The US Court of Appeals for the Eighth Circuit affirmed summary judgment of noninfringement in a trade dress suit, finding that the trade dress was functional and the attorneys’ fee award—as diminished by the district...more

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